Frank H. Robinson & Company, Inc.

Trademark Trial and Appeal Board

Sep 20, 1999

No. 74244767 (T.T.A.B. Sep. 20, 1999)

Paper No. 28
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/10/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Frank H. Robinson & Company, Inc.
________
Serial No. 74/244,767
_______
David H. Jaffer of Rosenblum, Parish & Isaacs for Frank H.
Robinson & Company, Inc.
Caryn L. Hines, Trademark Examining Attorney, Law Office 108
(David E. Shallant, Managing Attorney).
_______
Before Hohein, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by Frank H. Robinson &
Company, Inc. to register the term "MARKET VALIDATION" as a
service mark for "consulting services in the field of product and
market development and market research" in International Class 35
and "seminars and management training courses in the field of
product and market development and market research" in
International Class 41.1

1 Ser. No. 74/244,767, filed on February 10, 1992, which alleges dates
of first use of May 15, 1984 for the services in International Class
35 and dates of first use of March 4, 1988 for the services in
International Class 41. Although registration was originally sought
Ser. No. 74/244,767
2
Registration has been finally refused under Section 23
of the Trademark Act, 15 U.S.C. §1091, on the basis that the term
"MARKET VALIDATION" is "so highly descriptive of a marketing
approach" as to be generic and, thus, it is not capable of
distinguishing applicant's services.
Applicant has appealed. Briefs have been filed,2 but
an oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term must be capable of
serving as an indicator of source in order for it to be
registrable on the Supplemental Register. Whether a term has the
capacity necessary for registration on the Supplemental Register
is determined by considering the meaning thereof as applied to
the goods or services, the context in which it is used on any
specimens filed with the application, and the likely reaction
thereto by the average customer upon encountering the term in the

on the Principal Register, and an amendment to include a claim of
acquired distinctiveness pursuant to Section 2(f) of the Trademark
Act, 15 U.S.C. §1052(f), was subsequently submitted, applicant
thereafter amended the application to seek registration on the
Supplemental Register in response to a final refusal on the ground of
mere descriptiveness under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1).
2 Although applicant devotes a substantial portion of its initial brief
to the contention that the evidence which it has submitted establishes
that the term "MARKET VALIDATION" has acquired distinctiveness and
that such term is therefore registrable on the Principal Register, the
only issue before the Board, in view of the amendment of the
application to the Supplemental Register, is whether the term "MARKET
VALIDATION" is capable of distinguishing applicant's services.
Likewise, the Examining Attorney takes, in part, the same erroneous
approach of arguing issues which pertain to registrability on the
Principal Register rather than dealing solely with the issue of
genericness, which is determinative of whether the term "MARKET
VALIDATION" is registrable on the Supplemental Register for
applicant's services.
Ser. No. 74/244,767
3
marketplace. See In re Cosmetic Factory, Inc., 208 USPQ 443, 447
(TTAB 1980). "The test is not whether the mark is already
distinctive of the applicant’s goods [or services], but whether
it is capable of becoming so." In re Bush Brothers & Co., 884
F.2d 569, 12 USPQ2d 1058, 1059 (Fed. Cir. 1989), citing In re
Simmons Co., 278 F.2d 517, 126 USPQ 52, 53 (CCPA 1960).
Furthermore, as noted in H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 728 F.2d 987, 228 USPQ 528, 530
(Fed. Cir. 1986), a generic term is incapable of registration on
either the Principal Register or the Supplemental Register.
Moreover, in the case of a term asserted to be
incapable because it is generic, the burden is on the Patent and
Trademark Office to show the genericness of the term by "clear
evidence" thereof. In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). See
also In re American Fertility Society, ___ F.3d ___, ___ USPQ2d
___, 1999 U.S. App. LEXIS 19632, No. 98-1540, slip op. at 9 and
13 (Fed. Cir. Aug. 19, 1999). As stated in American Fertility
Society, id. at 12, "[a]ptness is insufficient to prove
genericness"; instead, "the correct legal test, as set forth in
Marvin Ginn, requires evidence of ’the genus of goods or services
at issue’ and the understanding by the general public that the
mark refers primarily to ’that genus of goods or services.’"
Specifically, in Marvin Ginn, supra at 530, our principal
reviewing court held that:
Determining whether a mark is generic [and
thus not capable of distinguishing an
applicant’s goods or services] ... involves a
Ser. No. 74/244,767
4
two-step inquiry: First, what is the genus
of goods or services at issue? Second, is
the term sought to be registered ...
understood by the relevant public primarily
to refer to that genus of goods or services?
In applying such standard, the Board, in In re Leatherman Tool
Group Inc., 32 USPQ2d 1443, 1449 (TTAB 1994), noted among other
things that "evidence of the relevant public’s understanding of a
term may be obtained from any competent source, including
newspapers, magazines, dictionaries, catalogs and other
publications," citing In re Northland Aluminum Products, Inc.,
777 F.2d 1566, 227 USPQ 961, 963 (Fed. Cir. 1985).
With respect to the first prong of the genericness
test, the Examining Attorney contends that "the class of services
at issue are business consultation and educational services
relating to issues that arise when new products are introduced."
The term "market validation," the Examining Attorney insists, "is
a business marketing term" which designates a class of services
involving "new product testing". Applicant, on the other hand,
maintains that the Examining Attorney has misunderstood and
therefore mischaracterized both its "consulting services in the
field of product and market development and market research" and
its "seminars and management training courses in the field of
product and market development and market research". In
particular, applicant asserts that (emphasis in original):
Applicant does not engage in product testing
for its customers, nor does Applicant advise
its customers how to test specific products.
Applicant’s consulting services relate to
educating businesses in [the] use of a
control system for addressing issues
encountered when companies introduce new or
Ser. No. 74/244,767
5
improved products. Applicant also provides
seminars and management training courses in
how to use this control system. Thus,
Applicant’s services do not relate to product
testing. Instead, they relate to a system
which facilitates a company’s management of
its introduction of new products.
Specifically, as variously stated in the advertising
submitted by applicant as specimens of use (italics in original):
Market Validation4 is a management
control system for product and market
development. It implements a precise
standard of performance for linking
developers and marketers directly to
customers. ....
Market Validation is a management
control system .... It links key business
managers directly to customers as an
integrated unit to understand: "Is the
market real?", What precisely does the
customer want?", "How large is the market?",
and "What must I do to develop and keep it?"
Most companies want to understand
markets and customers better but lack the
necessary performance standard, logistical
know-how, and discipline. Frank H. Robinson
& Co. is a facilitator and trainer. We start
with a high priority project, often a new
product. We formulate a team within the
company, and work along side it to conclusion
of a phase -- Initial Validation, Design Spec
Freeze, Sales Start-Up, Post Intro
Assesssment, or Sales Expansion. We then
work on another phase or product but with
decreased involvement.
Market Validation is a system of
collecting and analyzing information needed
for:
• Making investment decisions in each phase
of product and market development.
• Making the best possible operating
decisions in each phase.
• Trouble shooting problems in the latter
phases of market development.
Ser. No. 74/244,767
6
Thus, it would appear that applicant is correct that its services
do not involve new product "testing" as such, but rather relate
principally to business management of new product development and
marketing programs. Accordingly, and because applicant’s
services, as recited in the application, are very broadly
identified, we find that the genus, class or category thereof
must be viewed as being the same as those services are set forth
in the application, namely, "consulting services in the field of
product and market development and market research" and "seminars
and management training courses in the field of product and
market development and market research".
Turning, therefore, to the second prong of the test for
genericness, the Examining Attorney argues that "the relevant
public, which is the business community at large, understands the
claimed mark to refer to services relating to new product
testing" in the sense that the term "market validation" names the
process or method of new product development and market research
consulting services offered by applicant. Specifically, the
Examining Attorney contends that:
The claimed mark "MARKET VALIDATION" is a
widely used business term that refers to a
gauge used when consumers are introduced to
new products. It appears that companies test
market products and services to establish
their mass market appeal and [that] this
process is called "market validation." This
marketing term is so descriptive as to be
generic and incapable of identifying the
applicant’s services and distinguishing them
from the services of others. ....
As to applicant’s educational services, the Examining Attorney
asserts that "because ’market validation’ is the kind of business
Ser. No. 74/244,767
7
consultation performed by the applicant and is the marketing
subject matter taught in the [applicant’s management training
courses and] seminars, the proposed mark is so descriptive that
it appears to be generic for the services."
The Examining Attorney, in support of her position,
relies upon excerpts of articles from the "NEXIS" database, the
most pertinent of which are reproduced below, as demonstrating
that "the term ’market validation’ is a term of art in the
business industry" (emphasis added):3
"In filing the proxy statement, CarMax
is seeking market validation of the used-car
superstore concept--and public money to
finance its expansion." -- Tire Business,
January 20, 1997;
"Dave Orecchio, product marketing
director, said: ’Market validation really
matters in this industry and clearly
customers are validating Workview Office by
choosing it in record numbers." -- Electronic
News, August 5, 1996;
"... networks engineering at DEC, is to
help network operators move from high-speed

3
Although forming part of the record, many of the excerpts are from
articles obtained from proprietary news services. Such articles,
however, are of little, if any, probative value with respect to
genericness issues. This is because, unlike newspaper, magazine and
journal articles, wire-service stories are not presumed to have
circulated among the general public so as to have had any influence on
purchasers’ attitudes towards the particular term in question. See,
e.g., In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1555 (TTAB
1987) at n. 6 and In re Men’s Int’l Professional Tennis Council, 1
USPQ2d 1917, 1918 (TTAB 1987) at n. 5. Accordingly, no further
consideration will be given to such excerpts. Moreover, while the use
of a particular term in excerpts from foreign publications does not
prove the genericness thereof in the United States, such use
nevertheless has some limited probative value to the extent that it
may show the term to be generic in other countries for the very same
services which applicant provides under such term in the United
States. See In re Consolidated Cigar Corp., 13 USPQ2d 1481, 1483
(TTAB 1989). Consequently, we have considered the excerpts from
foreign publications for whatever probative value they may provide
with respect to the issue of genericness herein.
Ser. No. 74/244,767
8
data trials into deployment by offering
market validation and cross-vendor
integration services." -- Multichannel News,
November 27, 1995;
"That means in both instances,
shareholders soon will know whether there is
market validation for the products and
whether the companies have the prospect of
profits in the future." -- Financial Post
(Toronto), July 15, 1995 (article headlined:
"Dental-product firms near watershed");
"Treasury officials and White House
economic advisers claimed market validation
of U.S. policy by repeatedly highlighting the
bond market as long-term interest rates fell
below 7%." -- Bond Buyer, December 27, 1994;
"... by the controls supplier and sent
via modem to OEMs, which in turn can be used
for data collection, testing, and market
validation surveys." -- Appliance
Manufacturer, December 1994 (article
headlined: "Designing electronic controls;
Reference Guide: Controls");
"The market-validation phase takes about
a month. If the proponent demonstrates to
the review board that there is a sizable and
valid market for the proposed ...." -- EDN,
August 18, 1994 (article headlined:
"Hatching a new venture; ESL Inc.’s process
of developing commercial products using
military electronics technology; .... Putting
Military Technology to Other Uses");
"[Sears] will roll out three specialty
catalogs to its customers with Hanover Direct
Inc. as the licensee, and six other books are
in the ’market validation’ stage ...." -- DM
News, January 17, 1994;
"The growth has made Cheyenne’s stock a
hot ticket item on Wall Street--its market
validation is around $ 450 million, which
isn’t bad for a company that did $ 31 million
in revenue ...." -- InforWorld, March 29,
1993;
"... weatherproof gear for commercial
fishers and architectural lighting--are
Ser. No. 74/244,767
9
already on sale in America. There is
therefore some market validation and
marketing material already available." --
Herald (Glasgow), February 13, 1993;
"On another level, FTS 2000 is also a
form of market validation that will help the
carriers sell ISDN capacity in the private
arena ...." -- Computerworld Focus, May 4,
1988; and
"Lockheed-Georgia Co. is completing a
market validation study involving 30
countries prior to making a production
decision based on an initial batch of 30
aircraft." -- Aviation Week & Space
Technology, February 14, 1977.
The "NEXIS" excerpts, the Examining Attorney insists, "are ample
evidence" that the "meaning [which] the business community has
ascribed to ’market validation’" is that of "the apt name for new
product testing services," irrespective of whether such services
are provided by consulting or through seminars and management
training courses. The genericness refusal therefore "should be
upheld," according to the Examining Attorney.
Applicant, on the other hand, maintains that "[t]he
generic terms for Applicant’s services are ’consulting services’
and ’management training’, not ’market validation’ services," and
urges that the Examining Attorney has failed to present clear
evidence that the relevant purchasing public understands the term
"MARKET VALIDATION" to refer primarily to the class or category
of applicant’s services. Specifically, in addition to relying on
its submission of several consumer declarations, which the
Examining Attorney dismisses as "not persuasive,"4 applicant

4 Such declarations, although submitted in support of applicant’s
earlier claim of acquired distinctiveness, nevertheless also have a
Ser. No. 74/244,767
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asserts with respect to the "NEXIS" evidence of record that
"[n]one of the ... stories use MARKET VALIDATION to refer to
services related to educating businesses about how to address and
manage issues that arise when new products are introduced"
(emphasis in original). In particular, as applicant points out
in its reply:
In the present case, there is absolutely no
evidence that MARKET VALIDATION is generic
for Applicant’s "consulting services in the
field of product and market development and
market research ..." or "seminars and
management training courses in the field of
product and market development and market
research ...". While "market validation" may
be merely descriptive or even generic for
actual product testing, it is neither merely
descriptive or generic for Applicant’s
services, which are directed toward helping
companies manage product introduction not
toward the introduction of the products
themselves.
Upon careful consideration of the entire record, we are
constrained to agree with the Examining Attorney that the term
"MARKET VALIDATION" has been shown by clear evidence to be a
generic term for the field of product and market development and
market research in which applicant renders its consulting

bearing on the issue of genericness. In each instance, the declarant
recites in substance that:
I am familiar with the Market Validation services of
Frank H. Robinson & Company, Inc. We have used the firm’s
services since ... [a specified period of time]. I have
always understood the term Market Validation to refer
specifically to the product and market development services
of Frank H. Robinson & Company, Inc. as the only source of
services performed under the Market Validation service mark.
The Examining Attorney criticizes such declarations as being "from a
relatively small number of people who have dealt with the applicant
for many years" and for failing to "refer to or identify the
[applicant’s] services with any specificity".
Ser. No. 74/244,767
11
services and its seminars and management training courses. While
the declarations furnished by applicant indicate that the
declarants know applicant as the sole source of the particular
consulting and educational services which they have received from
applicant with respect to product and market development and
market research, the pertinent "NEXIS" excerpts clearly show--as
applicant essentially acknowledges in its reply--that the field
of "product and market development and market research" in which
applicant renders its services is generically known by the term
"market validation". Consequently, to the relevant purchasing
public for services of the kinds provided by applicant, the term
"MARKET VALIDATION" would primarily signify only a category,
class or type of consulting services and seminars and management
training courses.
Stated otherwise, such term generically names the
particular kinds of services rendered by applicant in the sense
that it designates the specific field in which applicant provides
its consulting services and its seminars and management training
courses. Businesses interested in managing their new product
introductions would readily understand that "MARKET VALIDATION"
generically names consulting services, as well as seminars and
management training courses, which pertain to the field of
product and market development and market research. See, e.g.,
In re Pennzoil Products Co., 20 USPQ2d 1753, 1758-60 (TTAB 1991)
["MULTI-VIS" for "multiple viscosity motor oil" is generic and
incapable of registration]; and In re Wickerware, Inc., 227 USPQ
970, 971 (TTAB 1985) ["WICKERWARE" for "mail order and
Ser. No. 74/244,767
12
distributorship services in the field of wicker furniture and
accessories" is generic for "a central characteristic of
appellant’s services" and thus is incapable of registration].
Accordingly, because the pertinent "NEXIS" excerpts constitute
clear evidence that the relevant purchasing public would
understand market validation consulting services to be consulting
services in the field of product and market development and
market research, and would likewise view market validation
seminars and training courses as seminars and management training
courses in the field of product and market development and market
research, the Patent and Trademark Office has met its burden of
establishing that the term "MARKET VALIDATION is generic for
applicant’s services and thus incapable of registration.
Decision: The refusal under Section 23 is affirmed.
G. D. Hohein
C. E. Walters
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board